The Leahy-Smith America Invents Act of 2011 (AIA) is the "Patent Reform" law passed by the US Senate on September 8, 2011, which made significant changes to the US Patent Law. The act has now fully gone into effect. The USPTO has a web page on the implementation of the Leahy-Smith Act.
On January 14, 2012, H.R. 6621, officially titled An Act To correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code was signed into law by President Obama. The Act made a number of changes to the AIA, which are noted below.
The following is a summary of most of the provisions of the law, which are most likely to affect our clients. The law runs 152 pages, and includes many things which are primarily of interest to the USPTO but which don't impact inventors directly, and if you're really interested you can read all 152 pages of the Act here in PDF form (off-site link to the Patently-O site).
Reexamination Standard: Changes standard for inter partes reexamination from “substantial new question of patentability" to a “reasonable likelihood that the requester would prevail.”
Statutory fee amounts: basically, this just puts the pre-AIA USPTO fee schedule into the law. The final fees enacted by the USPTO under its new fee-setting authority in the AIA went into effect on March 19, 2013.
Refunds and error in payment: Allows USPTO to refund excess claims fees for canceled claims or fees paid in error.
Micro entity discount: A new 75% discount on some fees will be offered to "micro entities" - small entities even smaller than Small Entities, basically individuals who are below a certain income level and have not filed more than a certain number of patent applications. Although this provision was supposed to take effect on enactment, in fact the implementation of the Micro Entity fees was delayed until March 19, 2013. For more information, see our page on Small Entity and Micro Entity fees.
Tax strategies are within the prior art: Effectively eliminates patents on methods of tax reduction, avoidance or deferral. Applies to any patent application that is pending on, or filed on or after enactment date, and to any patent that is issued on or after enactment date.
Best Mode: Failure to state the best mode (preferred embodiment) is no longer grounds for invalidity. Note that this does not remove the requirement in section 112 of the Patent Law to state the best mode in the application, it just makes it impossible to challenge the validity of a patent in litigation based on the failure to do so.
Human organism prohibition: Bans patents "directed to or encompassing human organisms". While commentators have raised concerns that this could be interpreted broadly to ban patents on such things as cell lines or methods of treating people, the USPTO position on this provision is that it does not change existing law or long-standing USPTO policy, which already banned patenting human beings, as such.
Patent term extension for drugs: A very particular section dealing with the consequences of when a product receives permission for patent term extension purposes, if the permission is sent after 4:30 Eastern Time on a business day, or on a non business day. Sometimes referred to in the blogosphere as the "Dog Ate My Homework Act", it is not clear that this will have any effect at all on anything other than Medco's U.S. Patent No. 5,196,404 covering ANGIOMAX (bivalirudin).
Virtual Marking: Allows marking a product with a reference to a web page instead of the actual patent numbers covering the product.
Marking (qui tam actions): Eliminates the ability of anyone but the government to sue a manufacturer who marked a product with an expired patent number to get civil penalties. A party who has suffered commercial harm by such marking can still sue, but only for actual damages.
Civil action under 35 U.S.C. 145: In an ex parte reexamination, a party who disagrees with a ruling of the BPAI (now to be called PTAB) can no longer sue the USPTO in District Court to overturn the ruling.
Multiple-Defendant Lawsuits: This provision is aimed at so-called "trolls", and is intended to make suing multiple defendants on a single patent more expensive. It will prevent a patent owner from suing more than one company in a single lawsuit, if the only grounds for the suit is that they all infringed the same patent. This also applies to prevent a court from consolidating multiple cases just because they all involve infringement of the same patent, unless the defendants agree, so that plaintiffs can't make an end-run around the law by bringing lots of lawsuits and then merging them afterward. The law applies to all lawsuits filed on or after the bill's enactment date.
Prioritized examination and fee (Track 1): Implements the "fast track" examination program previously announced by the USPTO, but put on hold due to budget limitations.
15% transition surcharge fees: Adds a 15% surcharge to patent fees. Surcharge expires when USPTO revises fee under fee provisions of the Act. A list of fee changes may be downloaded from the USPTO, and the updated fees are reflected in our Patent Budget Estimator and USPTO Patent Fees pages.
Paper Filing Penalty: Added a $400 penalty for applications which are not filed electronically.
Oath or Declaration: Several changes, including: (a) elimination of the requirement that an inventor state his/her citizenship, (b) adds new required wording; (c) allows the required statements to be made in the assignment rather than in the oath or declaration; (d) statements for non-signing inventors; (e) elimination of "lack of deceptive intent" statement in reissue declarations and when changing inventorship; (f) no longer requiring supplemental oath or declaration in reissues. The final rules issued in August 2012 also made the following changes: (a) removed requirement that declaration list all inventors, as long as an ADS is filed listing all inventors; (b) removed requirement that declaration state that person signing has reviewed and understands application, and acknowledging duty to disclose material relevant to patentability (although these things are still required, they just don't need to be stated in the declaration); (c) removed requirement that declaration acknowledge that willful false statements may jeopardize validity of patent and statements made are true; (d) the oath or declaration may be filed at any time up to the date of payment of the issue fee (but with a late filing surcharge if the oath or declaration is not filed with the application). Note: the proposed USPTO rules required filing the oath or declaration before allowance of the application, but the January 14, 2013, Act changed this.
Assignee as Applicant: For applications filed after September 16, 2012, an assignee is permitted (but not required) to apply for a patent as "applicant". The inventors must still be named and must still file oaths or declarations, or the assignee will have to petition to accept the application without the oaths or declarations, as in current practice. The inventor(s) names will still be used for application and patent identification purposes, however.
Third Party Preissuance Submissions: A new section 122(e) is added:
Third parties are allowed to submit certain types of information (publications, patents, published applications, but not public use or sale or improper inventorship, to which section 122(c) applies).
Submissions must be made before the earlier of (i) allowance or (ii) the later of six months after the publication of the application or the first rejection.
Submissions are made through a web-based submission system which can be accessed through the normal USPTO e-filing system, EFS-Web.
Applies to all patents, whenever issued.
A patent owner can file a Request for Supplemental Examination, supplying information not limited to patents and publications.
Supplemental Examination must be carried out within three months.
If information supplied raises at least one "substantial new question of patentability", Director is required to conduct a supplemental-examination-ordered ex parte reexamination.
If Director becomes aware of fraud either during supplemental examination or reexamination based on supplemental examination, the Director will refer the matter to the Attorney General.
Citing art in an issued patent's file under section 301: Expanded to allow filing written statements of the patent owner into a patent file, if the statements were filed in proceedings before a Federal court or the Office taking a position on the scope of a patent claim. Provides for submission of additional information with such statements and limits the use of such statements (not to be considered for any purpose other than to determine the proper meaning of a patent claim).
Priority examination for "important technologies": Will allow the Director to provide for priority examination for applications for "products, processes, or technologies that are important to the national economy or national competitiveness". Specifically says that this may be done "without recovering the aggregate extra cost of such prioritization". Watch for enabling regulations for definitions of these terms.
Transitional Program for review of certain business method patents: Eight-year transitional term, during which a petitioner who has been charged with or sued for infringement may bring post-grant review proceeding to determine validity of certain business method patents. Patent must claim a method or corresponding apparatus for performing data processing operations utilized in the practice, administration, or management of a financial product or service, but not patents for technological inventions.
Until this change, if there was any conflict between two inventors, the patent was granted to the first person to invent (conceive plus reduce to practice) in an "interference" proceeding. How "first to invent" worked involved complex sets of rules to decide who was actually first, especially if one inventor conceived first and reduced to practice later, and so on. "First to Invent" also affected what constituted "prior art" - in case of a publication or other prior art, an inventor could "swear behind" the prior art by showing he had invented before the publication.
The change to "first inventor to file" eliminates the need to inquire as to date of invention, although the Act as passed does not go all the way to a pure "first to file" system, where nothing matters but when the application was filed. The applicant still needs to be an inventor - just anyone cannot get a patent simply by filing first - and the patent goes to the application with the earliest "effective date". The effective date for an application will be its actual filing date or, if the inventor published less than a year before the filing date, the date of publication.
Patent applications (and the patents which result from them) which were filed under "First to Invent" remain under that standard. "First Inventor to File" will apply to any application with a claim "having an effective date as defined in section 100(i)" on or after March 16, 2013, or (ii) having a specific reference under sections 120, 121, or 365(c) to an application having such a claim (i.e. a continuation, continuation in part, divisional or National Stage of PCT), and to patents based on such applications.
This means that the old rules continue to apply to applications filed before March 16, 2013, and to continuations and divisionals of those applications which are filed after March 16th, assuming that they are "correct" continuations or divisionals - that is, nothing was added to the disclosure compared to the parent application.
The new rules will apply to any application that ever contains a claim that claims subject matter which was filed on or after March 16, 2013.
For continuations-in-part (CIPs) it would appear that one would have to look at each claim and see if any claim claims subject matter which has an effective date after March 16, 2013. Under the USPTO's interpretation of the rules, once the CIP is filed with at least one claim with an effective date after March 16th, the entire application would be under the First Inventor To File system, even if that claim is later canceled. This would probably mean that most CIPs filed after March 16, 2013, would be under the new rules, since CIPs are, by definition, filed to add new matter.
It remains unclear if one adds new matter to a pre-March 16th application, but keeps exactly the same claims, whether this would throw the application under the new rules or not - the claims are the same as originally filed, but if they read on the added matter it seems likely that at some point a court will decide that they now claim this new matter even if they are word-for-word the same. It would seem safest to assume this is true.
So, for the foreseeable future, we will be working under a dual system, some applications being judged under "first to invent", and others judged under "first to file".
You can get a summary of the patent provisions from the USPTO, or if you really care, you can read all 152 pages of the Act here in PDF form (off-site link to the Patently-O site).